In 1997, the United States Patent and Trademark Office (USPTO) received 237,045 patent applications and 224,355 trademark applications. In the same year, the USPTO issued 122,977 patents and registered 112,509 trademarks. Also in 1997, the United States Copyright Office registered more than 600,000 copyrights. In general, the number of patent and trademark application filings has increased over time, and this trend is likely to continue. Although many copyright applications for registration are filed pro se, most patent and trademark applications are prepared, filed and prosecuted by attorneys, patent attorneys and patent agents.
Of the approximately 1,000,000 lawyers now practicing in the United States, fewer than 23,000 were registered to practice patent law before the United States Patent and Trademark Office (as of May, 1999). With technology advancing at a rapid pace, and so few attorneys available to prepare and prosecute the ever-increasing number of patent applications to protect the technology, it is no surprise that most patent and trademark attorneys (and patent agents), and their associated law firms and companies, are often responsible for handling a large number of cases.
In practicing intellectual property law, practitioners are confronted, in each case, with meeting a bewildering number of due dates, many of which are critical. These myriad due dates are prescribed by Title 15 of the United States Code (for trademark matters), Title 17 of the United States Code (for copyright matters), and Title 35 of the United States Code (for patent matters). Additional deadlines are imposed by the Code of Federal Regulations (e.g., Title 37 of the Code of Federal Regulations which applies to patent and trademark matters), the Federal Rules of Civil Procedure, and various published Court rules. Yet other deadlines are imposed by clients or by corporate business objectives.
Each patent or trademark application handled by an attorney requires the docketing and meeting of a plurality of deadlines. For example, a typical utility patent application may impose a dozen or more time deadlines on a practitioner over the course of its prosecution. While some due dates may merely be reminders to take some action, others are critical deadlines (i.e, prescribed by statute) and failure to timely act prior to these so-called “statutory bar dates” may result in the loss of valuable intellectual property rights or in a legal malpractice claim against the practitioner. As noted by one practitioner, “According to Anthony Greene of Herbert L. Jamison & Co., LLC., West Orange, N.J., the failure to properly docket the multiplicity of patent and trademark due dates in even a modest IP practice is one of the major sources of IP malpractice claims. It has been widely speculated that this area of malpractice will grow as larger general practice firms, without previous experience in patents and trademarks, enter the IP field.” Richard C. Woodbridge and Paul A. Gardon, “Selecting an IP Docket Management System”, Intellectual Property Today, p. 25, Omega Communications, Inc., January 1999.
Typical actions, which may be docketed and performed by a practitioner in evaluating an invention for patentability, preparing, filing and prosecuting a utility patent application, or in tracking actions anticipated to be taken by the Patent Office, are as follows:                Conduct novelty search on invention        Prepare patentability opinion        File patent application before one year statutory bar (sale, public use or publication)        Receive acknowledgment postcard from USPTO        Receive official filing receipt and foreign filing license        Send Rule 56 Duty of Disclosure letter to inventor(s)        File Information Disclosure Statement        Respond to First Office Action        Send foreign filing letter to client        Foreign file before deadline to receive priority filing date        Respond to Second Office Action        File Notice of Appeal        File Appeal Brief        File formal drawings        Pay Issue Fee        Pay Maintenance Fee(s)        
A similar number of actions are tracked and docketed for trademark matters, and a lesser number of actions (i.e., renewals) are tracked for copyrights. Similar actions are also tracked for foreign matters (patent and trademark applications filed in foreign countries), and in inter partes proceedings (e.g., trademark oppositions and cancellation proceedings). It is clear, then, that even a relatively small law firm or company handling a portfolio of just a few hundred cases can easily be confronted with tracking and docketing tens of thousands of due dates for actions to be taken, either by the practitioner or the Patent Office. Large firms or companies may be faced with docketing more than a hundred thousand dues dates and actions.
In earlier times, patent and trademark attorneys relied on manual docketing systems which involved complicated manual ledger and/or tickler systems for tracking actions to be taken and deadlines to be met. These systems required constant attention and vigilance, highly trained docketing clerks and administrators, and direct supervision by attorneys. Often, the systems included redundancy to ensure that dates were not missed, which redundancy provided added protection at the expense of efficiency. Obviously, any manual system cannot be operated flawlessly. All humans make mistakes. Moreover, the opportunity for error increases as the number of files being maintained increases. Despite well-documented procedures, cross-checking and vigilance, all manual systems are susceptible to failure. They are especially problematic when employees leave, and new employees are forced to learn the system.
An obvious approach to solving the docketing problem is to use a computer to track pertinent dates and actions. Several companies now offer intellectual property (IP) docketing software products. These include Computer Packages, Inc. of Rockville, Md.; Flextrac Systems, Inc. of Denver, Colo.; Intellectual Property Network of Chicago, Ill.; MAG Systems of Pacifica, Calif.; Master Data Center of Southfield, Mich.; OP Solutions, Inc. of New York, N.Y.; Jamieson & Associates, Inc. of Arlington, Va.; Patrix AB of Goteborg, Sweden; Olcott International & Co. of Weehawken, N.J.; and LegalStar, Inc. of Williamsville, N.Y. (the assignee of this patent). Others have patented docketing software packages (see, e.g., U.S. Pat. No. 5,329,447 (Leedom, Jr.) “High Integrity Computer Implemented Docketing System”; U.S. Pat. No. 5,175,681 (Iwai et al.), “Computerized System for Managing Preparation and Prosecution of Applications in Various Countries for Protection of Industrial Property Rights”).
All commercially available IP docketing software products enable users to keep track of actions and due dates associated therewith. Some automatically calculate certain due dates for actions to be taken or annuities, maintenance fees, taxes, or other fees to be paid. Some also are preprogrammed with the laws and rules of multiple countries. All commercially available products provide “docket reports” detailing (usually in chronological order) actions required to be taken by a responsible attorney. Often, these reports are compiled and printed on a periodic basis (e.g., weekly) and distributed to responsible attorneys. In a well-designed system, a docket administrator or managing attorney will also receive a “master” docket report, to monitor all critical due dates.
Although all commercially available computer software docketing programs track actions, due dates and provide reports, they all (except LegalStar's product) suffer one serious disadvantage—they rely on responsible attorneys to read the reports and take appropriate action. If an attorney is away from the office, he or she may not receive a report or take appropriate action. The reports are also sometimes ineffective at communicating critical dates, since statutory bar dates are often commingled with non-critical due dates and reminder dates.
What is needed, then, is a docketing computer program for intellectual property legal matters that automatically scans all critical due dates in a database, compares these dates with some reference date (e.g., the date the scan is done) and displays a graphical, color-coded alert to warn of impending critical due dates.